Patent Lawyer Mostly Agrees With Me

byStephan KinsellaonJanuary 25, 2010

In response to my Reducing the Cost of IP Law, my friend and ex-colleague (and mentor) Steve Mendelsohn, a patent lawyer in Philadelphia, wrote me the following. N.B.: Steve is not a libertarian but is honest and smart, unlike patent shills (he’s also an excellent patent attorney, if you need one). Here’s an edited version of his comments, posted with his permission (for comments from another honest patent lawyer, see here):

I agree with much of what you say and don’t necessarily disagree with most of the rest. For example, I agree with you that we don’t know whether the patent system is doing what it says it’s doing as far as adding more than it’s subtracting. (You might know the answer to that question, but I agree that “we” don’t know.) I do believe that the system can be significantly improved without getting rid of it completely. Again, it is possible that the world would be better off without a patent system, but I’d rather see it improved first. (I think that our federal government needs a lot of improvement, too, but that doesn’t mean that no government is better. I can’t help but look at Somalia as an example of a country with no centralized government. But perhaps you’ve got a better example to point to.) (For now, I’d better stick to patents per se and not use them as a metaphor for government in general.) To me, the biggest problem with the current U.S. patent system is the granting of patents for inventions that are not novel and non-obvious due to the incompetence of the U.S. patent office. Just last week I was advising a client that I didn’t think that their invention was patentable. I had to qualify my advice by explaining that that did not mean that I didn’t think we could get a patent for the invention, just that I thought we shouldn’t be able to get a patent for the invention. I can’t tell you, but I suspect you’ve experienced this yourself many times, how many patent applications I’ve prosecuted over the years where I get the U.S. patent issued only to have the European, Japanese, or Korean patent office subsequently find better prior art and apply that art with a more-accurate understanding and appreciation about what it takes for there to be a patentable improvement over that art. The result is either an issued foreign patent with claims of much-reduced scope or an abandoned foreign patent application. Either way, there remains an issued, presumptively valid U.S. patent of unknown value. The presumption of validity is legitimate only if the U.S. patent office is doing a good job. Since the U.S. patent office is not doing a good job, I agree with you that the presumption of validity should be eliminated.

For years I have been wondering what the EPO, JPO, and KIPO are doing right that the USPTO is not and why can’t the USPTO look and see what the EPO, JPO, and KIPO are doing to figure it out and then adopt it. It reminds me of the time that Bush’s first crony appointment to head the PTO came to our PIPLA meeting and told us “We’ve got the best patent office in the world.” In reality, we wouldn’t even get the bronze metal. Our typical American chauvinism prevents us from looking elsewhere for improvement.

I am one of those many patent lawyers who would hate to have to provide search results and explain how my clients’ inventions were patentable over those search results. Nevertheless, perhaps the default (an invention is assumed to be patentable until the patent office proves otherwise) needs to be reversed.

Until the PTO gets its act together, one way to challenge some of these bad patents is through the ex parte reexamination procedure. It’s certainly not perfect and not free, but I’d bet it’s a lot cheaper than litigation as a way to defeat bad patents on a case by case basis. I’m only now in the midst of working on my first ex parte reexam for a client who is trying to knock out a competitor’s bad patent. The particular claim at issue is incredibly ridiculous. The client managed to knock out claims (in a first reexam) directed to a particular type of device having [an Oscillator Type A], a particular configuration for oscillators that has been around for about 60 years. The remaining claim is directed to devices that do exactly the same thing using [an Oscillator Type B], another particular configuration for oscillators that has been around for about 80 years! Because the main reference didn’t happen to discuss [an Oscillator Type A], the Examiner allowed those claims, presumably without any knowledge or appreciation for the interchangeability of those different types of oscillators. It’s too early to tell whether we will prevail.